KANG, Eun Ji et al.

Patent Trials and Appeals Board

Aug 31, 2020

2019003385 (P.T.A.B. Aug. 31, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/809,149 07/24/2015 Eun Ji KANG 8421-196 1026
83219 7590 08/31/2020
Renaissance IP Law Group LLP (PIP)
17933 NW Evergreen Place, Suite 121
Beaverton, OR 97006
EXAMINER
SALVUCCI, MATTHEW D
ART UNIT PAPER NUMBER
2613
NOTIFICATION DATE DELIVERY MODE
08/31/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
dkt@renaissanceiplaw.com
eofficeaction@appcoll.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EUN JI KANG, HOON MO YANG, and JONG HO ROH
Appeal 2019-003385
Application 14/809,149
Technology Center 2600
Before CAROLYN D. THOMAS, JAMES B. ARPIN,
and GREGG I. ANDERSON, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge ANDERSON.

Opinion Dissenting filed by Administrative Patent Judge THOMAS.

ANDERSON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–19 and 22. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Samsung
Electronics Co., Ltd. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The claims are directed to Application Processor for Determining
Data Transmission Order Based on Position of Display and Devices
Including the Same. Spec.,2 Title. A portable electronic device includes a
first display side and a second display side, formed on a side opposite the
first display side. Id. ¶ 5. The two sides form a double-sided display for
first and second images. Id. Sensors detect at least one position change of
the double-sided display. Id.
Figures 8A through 8D are reproduced below.

2 We use “Spec.” to refer to the Specification filed July 24, 2015, “Final
Act.” to refer to the Final Action mailed May 24, 2018, “Appeal Br.” to refer
to the Appeal Brief filed November 27, 2018, “Ans.” to refer to the
Examiner’s Answer mailed January 25, 2019, and “Reply Br.” to refer to the
Reply Brief filed March 25, 2019.
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Figures 8A–8C “depict a transmission order that first data IM1 is read by an
image rotator, an arrangement of pixels read in the transmission order, and
an arrangement of second data IM2 displayed on a second display side [of] a
double-sided display.” Id. ¶ 42. One position change is shown by reference
to Figure 8D, which illustrates a position change where the double-sided
display folded and rotated around the X-axis. Id. Figures 8A–8D, and other
similar drawing figures, illustrate operations of the image rotator displaying
the letter F when the display system rotates or is folded and then rotates. Id.
¶ 108. The resulting image of the second data IM2 is processed by display
control logic circuit “to look right (like ‘10:53 PM’ in FIGS. 2
and 4) to a user’s eyes.” Id. ¶ 111.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A system, comprising:

a status signal generator configured to output a status signal to
indicate one of a plurality of positions of at least one double-
sided display; and

an image rotator coupled to the status signal, the image rotator
configured to receive image data in a read order, and to output
the image data in a transmission order, the transmission order
being the same as the read order if the status signal indicates
a first position of the at least one double-sided display, and
the transmission order being a reverse of the read order if the
status signal indicates a second position of the at least one
double-sided display.
REFERENCES
The Examiner relies upon the following references:
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Name3 Reference Date
Takami US 2007/0070470 A1 Mar. 29, 2007
Yamazaki US 2010/0277443 A1 Nov. 4, 2010
REJECTION
Claims 1–19 and 22 are rejected under 35 U.S.C. § 103 as
unpatentable under 35 U.S.C. § 103 over the combined teachings of
Yamazaki and Takami. Final Act. 5–25.
OPINION
Issue: Has the Examiner shown a rational basis or motivation to combine
Yamazaki and Takami?

Referring to claim 1, the Examiner finds Yamazaki discloses an e-
book reader “in which display control is performed by a scan line driver
circuit and a signal line driver circuit.” Final Act. 5–6 (citing Yamazaki ¶ 7)
(emphasis omitted). Yamazaki also is relied on to show detecting the
position of the display. Id. at 6 (citing Yamazaki ¶ 152). The Examiner
finds that the recited “image rotator” is not disclosed in Yamazaki and cites
Takami for that limitation. Id. According to the Examiner, Takami’s
“image processing apparatus” is an “image rotator” in that it “reverses the
order of arrangement of pixel values” when image data is “back side data” of
the “double-sided document.” Id. at 6–7 (citing Takami ¶¶ 13, 89)
(emphasis omitted). The Examiner’s stated reason for combining Yamazaki
and Takami is that “it would have been obvious to one of ordinary skill in
the art to have modified Yamazaki with the features of an image rotator,” as
taught by Takami. Id. at 7–8.

3 All reference citations are to the first named inventor only.
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Appellant agrees that Yamazaki teaches “a status signal generator.”
Appeal Br. 8, 12. Appellant describes Takami’s teachings without
specifically disputing that the “image rotator” limitation of claim 1 is taught
by the reference. Id. at 9–11. Instead, Appellant argues Yamazaki includes
dedicated circuitry to display images and does not need an “image rotator.”
Id. at 12 (¶ 5), 16. Based in large part on the preceding, Appellant argues
there would have been no reason to combine Takami with Yamazaki. Id. at
16. Appellant further disputes the combination by asserting the combination
“finds its origin in Applicant’s disclosure and claimed subject matter.” Id. at
17.
On this record, we agree with Appellant that the Examiner has not
shown sufficient reason for the combination of the references’ teachings to
achieve the recited system. In the Answer, the Examiner states the position
from the Final Action as including “a clear statement that ‘it would have
been obvious to one of ordinary skill in the art to have modified Yamazaki
with the features . . . .’” Ans. 19. This reasoning is conclusory.4
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Thus, the
Examiner’s rejection is not sustained.

4 We do not find that sufficient reason for the proposed combination could
not have been found. We review the record as presented and, here, we find
it deficient.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–19, 22 103 Yamazaki, Takami 1–19, 22

REVERSED

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THOMAS, Administrative Patent Judge, dissenting.
I respectfully dissent from the Majority’s decision reversing the
Examiner’s rejection of claims 1–19 and 22 under 35 U.S.C. § 103 over the
combined teachings of Yamazaki and Takami.
Although I agree with the Majority that Appellant appears to be solely
relying on a combinability argument, i.e., Appellant conceding that
Yamazaki teaches “a status signal generator” and failing to rebut the specific
teachings relied upon in Takami (see Decision 5), I disagree with the
Majority that the Examiner failed to provide a “sufficient reason” for making
the combination.
The U.S. Supreme Court has held that in analyzing the obviousness of
combining elements, a court need not find specific teachings, but rather may
consider “the background knowledge possessed by a person having ordinary
skill in the art” and “the inferences and creative steps that a person of
ordinary skill in the art would employ.” See KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007). To be nonobvious, an improvement must be
“more than the predictable use of prior art elements according to their
established functions,” and the basis for an obviousness rejection must
include an “articulated reasoning with some rational underpinning to support
the legal conclusion of obviousness.” Id. at 417–18.
Here, the Examiner specifies that “Takami teaches image processing
including rotation of images” (Final Act. 6), and also states that “Takami
teaches that this will allow for data to be output on the appropriate side of a
page.” Id. at 7 (emphasis added). In the Answer, the Examiner appears to
clarify that at least the latter statement supra is the motivation for making
the combination. See Ans. 19. In other words, the Examiner presented a
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motivation, apparently taken from the Takami reference itself. As such, I
believe the Examiner has provided a sufficient reason, with some rational
underpinning, for making the combination.
Here, it appears the Majority is merely relying on the Examiner’s
statement which reads: “Therefore, it would have been obvious to one of
ordinary skill in the art to have modified Yamazaki with the features of an
image rotator . . . as taught by Takami” (see Final Act. 7–8), and ignoring
the sentence that precedes this statement, because the Majority notes the
Examiner’s “reasoning is conclusory.” See Decision 5. Although, we
generally see the motivation incorporated into the “[t]herefore, it would have
been obvious” statement, I see no prohibition on stating the motivation
elsewhere, as long as attention is directed thereto. Here, in the Answer, the
Examiner directs our attention to the motivation. See Ans. 19.
Regarding the aforementioned stated motivation, which Appellant
appears to acknowledge (see Appeal Br. 16–17), Appellant argues “it is
plain that Yamazaki does not need an image rotator because image data is
always displayed on the displays of a double-sided display.” Appeal Br. 16.
To the extent that Appellant is arguing that Yamazaki teaches away
from using an image rotator, as taught by Takami, I do not find, and
Appellant does not establish, that Yamazaki criticizes, discredits, or
otherwise discourages the use of an image rotator. “The prior art’s mere
disclosure of more than one alternative does not constitute a teaching away
from any of these alternatives because such disclosure does not criticize,
discredit, or otherwise discourage the solution claimed . . . .” In re Fulton,
391 F.3d 1195, 1201 (Fed. Cir. 2004).
Appellant further contends that “the stated motivation to combine
Yamazaki and Takami is not provided by the disclosure of Yamazaki.”
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Appeal Br. 16. However, the motivation need not be found in the references
sought to be combined. [A]nalysis [of whether the subject matter of a claim
would have been obvious] need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ. KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d at 988);
see also DyStar Textilfarben GMBH & Co. Deutschland KG v. C.H. Patrick
Co., 464 F.3d 1356, 1361 (Fed. Cir. 2006) (“The motivation need not be
found in the references sought to be combined, but may be found in any
number of sources, including common knowledge, the prior art as a whole,
or the nature of the problem itself.”).
Finally, Appellant contends that “the stated motivation to combine . . .
actually finds its origin in [Appellant’s] disclosure and claimed subject
matter.” Appeal Br. 17. I disagree with Appellant. Any judgment on
obviousness is in a sense necessarily a reconstruction based upon hindsight
reasoning, but so long as it takes into account only knowledge which was
within the level of ordinary skill at the time the claimed invention was made
and does not include knowledge gleaned only from applicant’s disclosure,
such a reconstruction is proper. In re McLaughlin, 443 F.2d 1392, 1395
(CCPA 1971). Here, the Examiner found actual teachings in the cited art,
i.e., unrebutted teachings, and has provided a rationale for the combination.
Further, the teachings suggest that the combination involves the predictable
use of prior art elements according to their established functions.
In the Reply Brief, Appellant fails to further rebut the Examiner’s
highlighted motivation, but instead offers belated new arguments against
Takami. See generally Reply Br. These belated arguments are technically
waived. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010)
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(informative) (“[T]he reply brief [is not] an opportunity to make arguments
that could have been made in the principal brief on appeal to rebut the
Examiner’s rejections, but were not.”).
Because I believe the Examiner offered a sufficient motivation, with a
rational underpinning, for combining the teachings of Yamazaki with
Takami, and clarified in the Answer what that motivation was, I would
affirm the Examiner’s rejection of claims 1–19 and 22 under 35 U.S.C.
§ 103.